ICBC Broadcast Holdings, Inc. v.
Claim Number: FA0801001126663
Complainant is ICBC Broadcast Holdings, Inc. (“Complainant”), represented by Sherri
N. Blount, of Morrison & Foerster, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wendywilliamsexperience.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2008.
On January
15, 2008, Moniker Online Services, Inc.
confirmed by e-mail to the National Arbitration Forum that the <wendywilliamsexperience.com>
domain name is registered with Moniker Online
Services, Inc. and that Respondent is the current registrant of the name. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On January 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wendywilliamsexperience.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wendywilliamsexperience.com> domain name is identical to Complainant’s WENDY WILLIAMS EXPERIENCE mark.
2. Respondent does not have any rights or legitimate interests in the <wendywilliamsexperience.com> domain name.
3. Respondent registered and used the <wendywilliamsexperience.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ICBC Broadcast
Holdings, Inc., was founded in 1971 and currently owns and operates eighteen
radio broadcast stations in seven markets throughout the
Respondent registered the <wendywilliamsexperience.com> domain name on September 18, 2004. Respondent’s disputed domain name resolves to a website that contains hyperlinks to unrelated third-party websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant
assert rights in the WENDY WILLIAMS EXPERIENCE mark through a registration with
the USPTO, for which the filing date of the mark predates the registration of
the disputed domain name. The Panel finds that this establishes Complainant’s
right in the mark for the purposes of Policy ¶ 4(a)(i). See Phoenix
Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective
date of Complainant's federal rights is . . . the filing date of its issued
registration. Although it might be possible to establish rights prior to that
date based on use, Complainant has submitted insufficient evidence to prove
common law rights before the filing date of its federal registration.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of Complainant’s trademark rights date back to
the application’s filing date); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”).
The <wendywilliamsexperience.com> domain name contains Complainant’s mark in its entirety with the addition of a generic top-level domain “.com.” The Panel finds the addition of the generic top-level domain “.com” does not affect an analysis under Policy ¶ 4(a)(i), and thus the disputed domain name is identical to Complainant’s WENDY WILLIAMS EXPERIENCE mark pursuant to Policy ¶ 4(a)(i). See Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. In the instant proceeding, the Panel finds that Complainant has satisfied its burden. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that there is no evidence in the record or in the WHOIS
registration that Complainant is commonly known by the disputed domain name,
and thus, Respondent is not commonly known by the <wendywilliamsexperience.com> domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
Complainant alleges Respondent uses
the disputed domain name to host unrelated third-party links. The Panel agrees with Complainant’s
assertion, and holds that this use is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of
Respondent and for Respondent's benefit is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003)
(“Respondent's registration and use of the <gayaol.com> domain name with
the intent to divert Internet users to Respondent's website suggests that
Respondent has no rights to or legitimate interests in the disputed domain name
pursuant to Policy Paragraph 4(a)(ii).”).
The Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent’s <wendywilliamsexperience.com> domain
name is identical to Complainant’s WENDY WILLIAMS EXPERIENCE mark and is likely to cause
confusion as to the source, sponsorship, affiliation or endorsement of
Respondent’s website under Policy ¶ 4(b)(iv).
The Panel agrees with this claim and finds the disputed domain name was
registered and used in bad faith. See Bank
of Am. Corp. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wendywilliamsexperience.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 5, 2008
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